The New York Yankees Are Officially “Evil”
May 14, 2013
The New York Yankees have been known as “Baseball’s Evil Empire” for several years now. Looking to capitalize on that association, a company called Evil Enterprises applied in 2008 for a trademark on that phrase to be used on clothing, including hats and t-shirts. However, the Yankees proved that only they had the right to claim the name, “Baseball’s Evil Empire.”
Evil Enterprises’ application was approved by the trademark Office and was published according to standard trademark procedure. Publication allows parties who believe they will be legally injured by the registration of the trademark to oppose the registration. An opposition is done by filing, within a certain time limit from the date of publication, a notice of opposition and other legal papers seeking to persuade the Office not to issue the trademark.
The Yankees learned of the trademark application and filed an opposition to the registration in 2009. In February of this year, the trademark Office’s administrative judges determined that “there is only one EVIL EMPIRE in baseball and it is the New York Yankees.” As a result, the trademark was denied because of a likelihood of confusion with the Yankees. This is true even though the Yankees never used the phrase “Baseball’s Evil Empire” in their own marketing or licensed goods, because the public associated that term strongly with the Yankees.
The Yankees also argued that “Baseball’s Evil Empire” disparaged the team. Although they won anyway on likelihood of confusion, the Yankees were not able to claim that the term was disparaging. The Yankees could not claim disparagement because they implicitly embraced the nick name, or as the judges put it, “having succumbed to the lure of the dark side, opposer will not now be heard to complain about the judgment of those who prefer the comfort of the light.”
While I have no doubt that the Yankees are in fact Baseball’s Evil Empire, they may have had a harder time proving the exclusive legal right to that name if they had waited. If the opposition period had expired, the trademark would have been registered and the Yankees would have had to resort to a cancellation procedure. Further, if enough time after the registration had passed, the mark could have become “incontestable” and limited the grounds on which it could be cancelled.
The TTAB decision can be found here.
Robert Williams' practice encompasses business litigation and a full range of intellectual property services. Prior to joining Rogers Townsend, Robert worked for the United States Patent and Trademark Office.